The UK Supreme Court has today handed down its hotly-anticipated trade mark decision in the Skykick v Sky case. The Supreme Court judgment was given notwithstanding that the parties having settled the dispute, indicating the significance of the points of law that were raised in the case.

The Supreme Court has concurred with the High Court in its position on the existence of bad faith, and provided guidance on the circumstances which may amount to bad faith. 

The Supreme Court has ruled that bad faith may arise in the following circumstances: 

• (i) the trade mark proprietor has sought broad protection regardless of the commercial justification for doing so and with the intention of obtaining an exclusive right; and 
• (ii) the trade mark proprietor does not then use the trade mark for the specification of goods and services for which it has been registered but as a legal weapon against third parties. 

The Supreme Court also notes that it is not always necessary for the party seeking a declaration of invalidity on the basis of bad faith, to set out, in advance, the narrower specification to which the trade mark proprietor should be entitled. Each case will be decided on its own individual facts and merits, and the Supreme Court opines that it would be anomalous if the existence of the circumstances set out by the Supreme Court could never lead to an inference of bad faith. 

It remains to be seen how the decision will be applied in future cases. However, for now, the decision may mark a shift in practice towards a more US-style trade mark system, the latter which requires a trade mark applicant to specify a narrow and precise category of goods and/or services in its application. Trade mark proprietors will need to review their prior and future trade mark filing strategies and note that overly broad specifications may be vulnerable to challenge on the basis of bad faith. The decision will be welcomed by those seeking to launch new brands to do so with more confidence in respect of marks that are not in obvious use by others.

With respect to infringement, the Supreme Court notes that where a specification includes terms which are ambiguous and not clear, the specification should be construed as those goods or services which are clearly covered. Again, this will be welcomed by businesses looking to launch new brands.